The Effect of the Supreme Court Decision on Patent Reform Legislation John F. Duffy Professor of Law George Washington University Law School © 2007 John F. Duffy

Patent Cases and the “CVSG” Process Increasingly in patent cases, the Court is asking the Solicitor General for an opinion at the certiorari stage (Calling for the Views of the Solicitor General – CVSG). Recent patent cases in which the Court has used the CVSG process: Merck v. Integra LabCorp v. Metabolite KSR v. Teleflex Microsoft v. AT&T Quanta Computer v. LG Electronics (patent exhaustion) Quanta Computer v. LG Electronics (patent exhaustion) Joblove v. Barr Labs (reverse payments) Joblove v. Barr Labs (reverse payments)

The Effect on the Legislative Process: Major Issues Already Addressed by the Court 1. eBay v. MercExchange – addresses the availability of injunctive relief. 2. Microsoft v. AT&T – Extraterritorial infringement liability under 35 U.S.C. § 271(f). 3. KSR v. Teleflex – Nonobviousness standard.

The Effect on Currently Pending Legislative Proposals 1. The immediate effect of recent S.Ct. decisions, especially MedImmune and KSR. 1. The immediate effect of recent S.Ct. decisions, especially MedImmune and KSR. 2. The possibility of future Supreme Court cases. 2. The possibility of future Supreme Court cases. 3. The more general structural questions raised by the S. Ct.’s increased involvement in the field. 3. The more general structural questions raised by the S. Ct.’s increased involvement in the field.

The Effect on Currently Pending Legislative Proposals 1. Opposition Procedures vs. MedImmune + KSR. 1. Opposition Procedures vs. MedImmune + KSR. – Whether the need for post-grant opposition procedures is changed by the increased availability of declaratory relief (MedImmune) coupled with the increased ability of district courts to determine validity on summary judgment (KSR). 2. Presumption of Validity 2. Presumption of Validity – Whether patentees would benefit from post-grant opposition procedures if the Supreme Court were to modify the CAFC law requiring “clear and convincing” evidence to overcome the statutory presumption of validity (as suggested in KSR). 3. Claim Interpretation and Infringement Analysis 3. Claim Interpretation and Infringement Analysis 4. Damages and Supreme Court Precedent 4. Damages and Supreme Court Precedent

The Effect on Currently Pending Legislative Proposals 5. Rulemaking Authority 5. Rulemaking Authority – Whether the PTO’s expanded rulemaking authority could be used to change the law of inequitable conduct. – Whether the PTO’s ability to get issues resolved by the Supreme Court decreases the need for substantive rulemaking authority. 6. Judicial Structure 6. Judicial Structure – Whether the venue and jurisdictional provisions take into account the increased availability of declaratory relief after MedImmune. – Whether other appellate courts should be authorized to hear patent appeals. See Nard & Duffy, Rethinking Patent Law’s Uniformity Principle, 71 Nw. U. L. Rev. ___ (forthcoming summer 2007).